!071394 Electronic records as patent evidence: CFR 37, et.al.
A few days ago, I posted the question of the validity of electronic notes
and records in patenting procedures, where people use computers as electronic
notebooks to record their activities while inventing a device.
The general answer which I received was that it is doubtful that
electronically stored notes and records can be used in patent proceedings,
since such information is much more difficult to authenticate with regards
to the original date of entry, or that the information is unadulterated.
People's advice (some of which I mention below) was to always print out
such electronically stored information as it is entered, and then treat
the printed records as you would anything other document (notarized, etc).
Before I summarize some of the comments I received, it would help to
cite some patent law (which I should have looked at in the first place). The
issue of electronic notes and records most likely occurs during interference
proceedings, for which the CFR has a section:
Code of Federal Regulations Volume 37 - CFR 37 1.671(b)
Subpart E - Interference
1.671 Evidence must comply with rules
1.671(b) Except as otherwise provided in this subpart, the
Federal Rules of Evidence shall apply to interference
proceedings. Those portions of the Federal Rules of Evidence
relating to criminal actions, juries, and other matters not
relevant to interferences shall not apply.
Now I haven't see the Federal Rules of Evidence, but I venture that in these
rules there is something that disallows for the purpose of establishing a
priority in time, the use of electronically stored information. (If anyone
could check, I would appreciate it). So for interference purposes (and I
suspect other patent activities), the Federal Rules of Evidence apply.
At some point in future, when digital signature standards are approved, I
suspect properly prepared electronic documents will be admissible (I think
ATT had some trial escrow scheme where code words were published in the New
York Times).
Some of the comments:
There is no set standard on this question, although printing out and
notarizing or witnessing the printout is the best bet. The rule basically
is that the data has to be intrinsically reliable both as to what was
there and when it was put there. The problem is that the data and dates
on the electronic files can so easily (and undetectably) be modified
simply by resetting the date on your computer, then modifying and saving
the file.
FYI, for the last two years a consortium of about 19 companies has been
looking into how to handle electronic records to ensure legal
admissibility, without having to print them out (which can take an
enormous amount of paper in some cases). Brad Huther, Associate
Commissioner of the PTO, has set up a "matrix" group including several
other agencies (AIIM, NIST, FDA) which will be meeting towards the end of
August with the consortium to discuss their proposals. This eventually
may lead to the adoption of standards by the agencies, especially NIST
(National Institute of Standards & Technology, the official government
standards agency). The consortium is being led by Dr. Kewal K. Likhyani.
His address, phone and fax are:
E.I. Du Pont de Nemours & Company, Inc.
Fibers
Chestnut Run Plaza - Laurel Run
Wilmington, DE 19880-0705
Phone: 302-999-3845
Fax: 302-999-2805
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Excellent point. I have taught several classes at the University of
Texas on product promotion and that issue came up. The experience of
several members was that the heavy, spine bound book in which the pages
cannot be remove and having EACH major page notorized was the BEST way
to document first-to-invent cases. Several inventors who have software
that "achieve" the same purpose as the written log-book had a much
harder time proving the credibility of the source since software entries
are much easier to forge. This is one area where technology is not
neccessarily better. We had discussed scanning in the inventors notebook
into a desktop publishing program to create an electronic version but
just an idea.
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Anything you can do to minimize the likelihood that someone can later
argue that the records were made up only after the fact, will help. For
example, your opponent will know that file "last modified" dates are
easily changed after the fact in electronic records. So don't rely on
that exclusively. A date on a printout is also easily modifyable after
the fact with today's photocopiers, and also easily back-dated at the
time it is printed. So don't rely exclusively on a date on a hard copy
either. A notarization is a good idea, since the notarization date is put
there by a third party notary who risks his license if he lies. He also
keeps an independent record of the notarization, so if your opponent
later says you modified the notarization date after the fact using a
photocopier, you will be able to get the notary's own record to prove
that you didn't. But if you're considering filing a patent application in
the future, the best way to establish a date of invention is by using the
PTO's Disclosure Document program. You send in your description, and they
stamp it with a receive date and put it in a safe for up to two years
until you file your patent application. There are some traps if you don't
do it correctly, so read the MPEP carefully.
[NOTE: the PTO's Disclosure Document program is a PTO service where you can
send them any printed materials, and for $10 they will hold the records for
two years, and testify that they received your materials on a specific date.
Within two years, you have to file a patent citing this document, or the PTO
destroys the records. By itself, the Disclosure Document offers no protection.
Check Pressman's book for a better explanation of this service.]
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Boy what a great question!
I don't have any idea and the Patent lawyers here at LLNL haven't even asked
the question. An example for your thoughts:
Invent some new well logging gear and make a disclosure in the
usual way (paper). The disclosure references testing done to
verify some theory used to design the preferred embodiment. All
theory and the test are in the computer except for some handwritten
notes used as a backup. This type of data which only exists in
the computer (on the order of 100 Mbytes) has often been important in
patent cases in the past. Even printing it out is economically
infeasible not to mention silly.
How would you --
1. Establish the date of acquisition? Give copies to third party?
2. Authenticate or sign the data?
3. Assure that the data will survive the 20 or 30 years that may be
required for patent litigation?
Patent types here haven't even thought of this yet but I would expect that
future patent cases may hinge on just these types of considerations.
Current patent practice may need to think ahead on these issues to make
defendable patents.
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It's my understanding (I don't have citations) that the PTO and courts have
generally not accepted electronic records. The reason, however, is not that
electronic records are _per se_ unacceptable, but that applicants are
generally unable to adequately authenticate the date and content of their
electronic records. In other words, the PTO and courts don't require records
to be on any particular media (paper, electronic, magnetic, optical, etc.),
but they do require records to be in a form that permits independent
corroboration. Paper makes this relatively easy (if handled correctly), so
the PTO and courts readily accept paper records. Non-paper media is easier
to falsify, so the PTO and courts require greater proof that the records are
legitimate. Therefore, patentees wishing to use electronic records must
adopt methods that provide this proof. For example (to borrow from Johnny
Carson's old character, "Karnac the Magnificent"): seal the electronic
records in a mayonnaise jar kept on Funk & Wagner's porch. In other words,
patentees do not have to use paper media if they can prove that their
records are, nevertheless, immutable.
Greg Aharonian
Internet Patent News Service